Descriptive terms are not protectable by trademark absent a showing of secondary meaning in the minds of the consuming public.
Zatarain's, Inc. v. Oak Grove Smokehouse, Inc.
Plaintiff had a trademark on Fish-Fri. Defendants sold coatings for fried fish with labels says "fish fry." Plaintiff sued them for infringing on its trademark.
District court found that Fish-Fri was a descriptive term identifying a function of the product sold.
Is Fish-Fri descriptive of the product?
Can plaintiff protect its trademark?
Fish fry is a generic term for foodstuffs used to fry fish. Alternatively, it's merely descriptive of the characteristics of the product.
There are many tests used for classifying a mark as descriptive:
- The dictionary test
- The "imagination test"
- "If a term 'requires imagination, thought and perception to reach a conclusion as to the nature of goods,' it is considered a suggestive term. Alternatively, a term is descriptive if standing alone it conveys information as to the characteristics of the product."
- Whether the trademarked terms are needed by competitors to describe the product
- How much the term has been used descriptively by competitors.
- Page 127, BottomPage 128
In assessing a claim of secondary meaning, the major inquiry is the consumer’s attitude toward the mark. The mark must denote to the consumer “a single thing coming from a single source,” to support a finding of secondary meaning. . . . Factors such as amount and manner of advertising, volume of sales, and length and manner of use may serve as circumstantial evidence relevant to the issue of secondary meaning.
- Webster's dictionary defines "fish fry" as a picnic where fish are fried, or fried fish itself. This implies that Fish-Fri is descriptive.
- Observation alone can tell one that Fish-Fri is a batter mix for frying fish. It does not require any imagination and thus must be considered descriptive under this test.
- It is common sense that a batter mix would use a term like this. Fish is a common food, and frying is a very popular method of preparing it. There are few synonyms to these words, so it is likely that these terms would be used descriptively.
- As mentioned, the defendants and others have named their products similarly to plaintiff. When so many companies come up with the same name, it is likely a descriptive one.
Plaintiff has been using its trademark for over 30 years. It is a popular product and surveys indicate roughly a quarter of people specify Zatarain's Fish-Fri when thinking of fish coatings.
Fish-Fri is descriptive but has gained a secondary meaning and thus is protectable. Affirmed.